Unit 3 – Consolidation IP – TRADE MARKS

MS = member state

What is protected?	A brand name and/or a logo or goods or services (also, in limited circumstances, shapes)
What is the benefit of protection?	Exclusive right to the use of the trade mark with statutory protection
How is it obtained?	Registration
How long does it last?	Indefinitely

TMA 1994 – implemented various EU Directives (TM rules almost identical through all MS – heavy harmonization) [more so than other rights]

What is it?

- A badge/indication of trade origin of goods or services from a particular supplier

TMA94 s.1 – “any sign capable of being represented graphically which is capable of distinguishing goods/services of one undertaking from those of others”

Adv over passing off:

Once registered, no need to prove goodwill or misrep
Gives monopoly and exclusive right to use TM for which its registered
TM is on register for anyone to see free of charge via IP office
Can last indefinitely (in contrast to other IP rights)

What can be registered?

Anything that falls within definition above

Shapes and sounds (jingle for Direct line)
Picture (Alliance & Leicester registered a jester tapping the side of his nose)
Smells (been attempted – litigation over this point)

Main functions of registered TM’s:

To indicate trade origin of goods/services with particular supplier – s.1
Indication of quality of product associated with that supplier
Measure of ongoing and changing value of particular brand image
Useful and commercially exploitable piece of property in itself

Advantages/ Consequences of registration

Duration

10 year, renewable for subsequent 10 year periods
Provided mark doesn’t lose its ability to distinguish particular goods/services in question and is kept in use, can remain in registration

Exclusive rights:

S.9(1) – proprietor of registered TM has exclusive rights in the TM which are infringed by use of the TK in UK without his consent
s.10/11 – sets out the infringing acts

Other reasons:

easier to sue for infringement of TM compared to passing off (initial presumption of validity and no need for C to prove rep of mark)
You can register a TM before you start using it
There is a public record (able to search existing names, warning others off)
Dangers that somebody else will register

Registration system

TM has to be registered in relation to named goods/services, in that class(es) must be chosen

Vienna agreement:

Hierarchal system that divides all figurative elements into divisions and sections

Adv – filing figurative elements of marks with ref to a single classification system

Only 28 contracting states

OUTCOME 1 – Analyse client’s situation and decide whether it is appropriate to apply for registration of a TM

Can the TM meet the statutory definition?	Can the sign be graphically represented? TM rules requirements – sign must be capable of being clearly reproduced on 8cmx8cm square in TM journal Problematic but not impossible for certain distinctive features: Sounds = wavelength, musical notation, duration Smells = difficult, formula doesn’t evoke scent (insufficient). Ideally require a sample L’Oreal v Bellure Can sign distinguish the goods/services of the applicant from those of other undertakings? Mark as a whole needs to be distinctive, rather than particular features within it E.g. work mark “deliberately innovative” lacked distinctive character – Interactive Intelligence Inc’s Registration Anything that falls within definition is registered unless there are contrary grounds for refusing registration:
Absolute grounds for refusal	s.3(1) – following shall not be registered: a) signs which don’t satisfy requirements of s.1(1) b) TM devoid of distinctive character c) TM consist solely of signs or indications which designate kind/quality/quantity/purpose/value/geographical origin/time of production/rendering of services/other characteristics of goods/services d) TM which have become customary in current language or bona fida established trade practices - TMs can be reg despite falling within bars to reg above if over time customers come to associate mark with product (for at least 5 years) Use of names as TMs: s.11(2) – any person entitled to use own personal business name and address BUT many names are common and can’t be reg on their own – need a distinguishable feature Philips v Remington – ECJ approach: individual assessment of each case facts taking into account likely scope, area of use, range of products and likely customers of mark El Du Pont de Nemours v ST Dupont – even common names can acquire distinctiveness through use Aspects of the goods/services themselves within s.3(1)(c) This para strikes out TMs which consist exclusively of indications which are terms common in the trade If descriptive aspect combined with distinctive feature this is okay Signs only serving to describe the type of goods not okay Words of quality or value unregistrable by themselves “magic or supreme” Bostik v Henkel – hyper glue was allowed as hyper wasn’t synonymous with super Proctor and Gamble v OHIM – baby dry was allowed despite being descriptive as it’s an uncommon combination -> widening definition? DKV Deutsche Krankenversicherung v OHIM – “company line” too generic Easynet Group v Easygroup IP – correct approach is an overall assessment of the composite expression as to whether it is descriptive or not. If it is not, it is distinctive and registrable Marks suggesting geographical origin: Usually not registrable as TMs Windsurfing Chiemsee v Boots - geographical names have to be left available for other traders to use in future Geographical names not indicating origin are unregistrable as they are deceptive Objection for deceptiveness can’t be overcome by any amount of use of mark Peek and Cloppenburg v OHIM – CTM’s more relaxed approach for small geographical locations If not exclusively geographical then more likely to be registrable Collective marks registrable under s.49 and Sch1 – marks which show goods/services provided by member of particular trade association, distinguishing them from other organization/persons e.g. Melton Mowbray Certificate marks registrable under s.50 and Sch2 – to show highly descriptive characteristics of goods/services which would normally be caught by s.3(1)(c) e.g. woolmark for textiles and stilton for cheese Protected designs for origin (PDO) and protected geographical indications (PGI) protection or EU and WIPO appellations of origin at international level Conzorzio del Prosciutto di Parma v Asda Stores – Parma ham protected by a PDO Art 7 Paris convention – requires signatories to accept for filing and to protect collective marks belonging to associations, even if such organizations do not possess industrial or commercial establishment
Shape marks	s.3(2) - Possible to register for shape of goods/packaging as long as it doesn’t consist exclusively of: a) shape which results from goods themselves b) shape of goods necessary to achieve technical result; or c) shape which gives substantial value to the goods - High threshold as dangerous to allow monopoly on shapes - Only shape that is a badge is likely to be able to be reg - Must be distinctive, eye catching and memorable, and raise association with particular trade source - s.3(1) – distinctiveness by use could apply to marks comprising in part by matters restricted by s.3(2), this is how coca cola bottle was reg a) Shape of goods themselves - Philips v Remington – shape of razor head not reg as shape determined by technical function - Purpose of s.3(2) - The shape of products is reg as a RDR if innovative. TM not appropriate - Dyson v Reg of TM – infinitely variable shapes could not be graphically represented so as to constitute a distinctive TM, not a sign in first place. Easier to reg shape of package (cola bottle) - Society des produits nestle v Unilever – shape of Vienetta resulted from nature of product itself so not reg b) Shape of goods which is necessary to achieve a technical function: - As long as shape is important to the technical outcome, that is likely to prevent reg c) Shape which gives substantial value to the goods: - Shapes which make goods more valuable to user but which is protected by way neither of patent nor RDR is not registrable
Public interest objections s.3(3) and bad faith apps s.3(6)	Not registrable if contrary to public policy or morality (s.3(3)(a)), is likely to deceive (s.3(3)(b)) or is made in bad faith (s.3(6) Likely to deceive: E.g. Otto Seligman for Registration of a Trade Mark – “instant dip” refused – some of the materials were not dips Phones4u v Phone4u.co.uk Internet – limitation - the use of a similar mark in different colours may not be deceptive Bad faith apps: Jules Rimet Cup v FA – claimant had acted in bad faith seeking to register “World Cup Willie” logo and words as TMs C knew here was valuable residual goodwill in UK for such a familiar mark Public policy or morality: Ghazilian’s Trade Mark Application – application to register “tiny penis” failed French Connection’s Trade Mark Application – FCUK TM held valid
Evidence of use to overcome absolute grounds	Lack of distinctiveness can be overcome by publically recognized use – building up goodwill in the mark Applicant must establish rep ion UK by sending stat dec to TM registry giving evidence of advertising spend, turnover in the goods and length of time Length of time (informal) = 5 years For colours, must be a combination not a single shade, however in BP...

#10481 - Unit 3 – Trade Marks - International Intellectual Property

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